American Express Careers

Senior Counsel - IP Law & Strategy

New York, New York; Phoenix, Arizona; Sunrise, Florida
Other

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Job Description

General Counsel’s Organization:
 
Where great legal minds influence global business strategy.
 
Our mission is to protect and strengthen American Express through legal expertise and strategic advice that helps our business partners manage risk, identify opportunities, and deliver on the company’s promise of exceptional products and services. Given the dynamic nature of the global payments industry and the valued partnership between our team and the business, we see it as imperative to attract and develop talented people by:
  • Providing rich work experiences and opportunities for professional development
  • Recognizing and rewarding those who drive and deliver results
  • Respecting and valuing diversity, integrity, and personal accountability
The General Counsel’s Organization of American Express is seeking an experienced, hard-working, highly-motivated and creative intellectual property attorney.  The attorney will lead the Intellectual Property Law and Strategy (IPLS) practice group as Senior Counsel, and report to the Managing Counsel, [Enterprise and Regulatory].  The IPLS group is the legal function that handles intellectual property issues across the company world-wide, including patent and trademark filing and prosecution, intellectual property litigation, and intellectual property due diligence to support M&A and other commercial transactions. 
 
The attorney will lead the IPLS team of lawyers and legal professionals and provide proactive thought leadership to the Company’s intellectual property strategy and program, informed by and anticipating legal and business intellectual property developments as they evolve over time.
 
The attorney in this position will work with the IPLS team and clients across multiple functional areas to strategically protect the company’s intellectual property interests.  The work will include client counseling; aligning patent strategy with the business priorities; driving US and foreign patent portfolio development; implementing appropriate pruning; establishing reasonable cost control. 
 
Role & Responsibilities:
  • Partner with management and colleagues to develop, implement and execute policies and practices that drive a proactive, business oriented IP program
  • Provide clear, actionable and business-savvy intellectual property advice to business clients engaged in product development and innovation
  • Build the company’s patent portfolio through strategic patent preparation and prosecution
  • Manage patent applications throughout the patent lifecycle by working directly with the inventor community and patent prosecution counsel to ensure high quality patent applications for strategically important inventions
  • Collaborate on the invention disclosure review process to help ensure that the best inventions are identified and patented
  • Collaborate with business and technical teams in invention mining sessions and patent education sessions
  • Educate clients on important intellectual property issues and forge strong client relationships that leverage opportunities to identify, create and protect valuable intellectual property
  • Provide strong leadership to and for the IPLS team collectively and individually, including among other things by setting clear strategies and goals, recruiting and cultivating talented team members, providing timely coaching and feedback, actively encouraging collaboration and teamwork (within the team and beyond), and fostering career growth and development.  
  • Proactively monitor external legal and business trends and best practices re intellectual property matters, and factor them in to the Company’s intellectual property strategies and programs.
  • Actively participate as a member of the leadership team for the broader Enterprise and Regulatory Legal group, offering thought leadership for cross-group and cross-subject matter issues and projects

Qualifications

Are you ready for the challenge?
 
Minimum qualifications:
  • B.S. degree and/or advanced degree in Electrical Engineering, Computer Engineering, Physics, or Computer Science
  • J.D. from a highly respected law school  and admission to a state bar
  • Admission to practice before the USPTO
  • At least 8 years of intellectual property attorney experience with reputable, highly rated law firms and/or financial services or technical companies
Preferred qualifications:
  • In-house experience in overseeing/leading an IP team(s) strongly preferred 
  • Excellent patent preparation and prosecution skills, with experience in managing prosecution  
  • Comprehensive understanding of intellectual property case law, rules and regulations
  • Proficient in using the full suite of Microsoft Office programs
  • Exceptional interpersonal skills and collaborative work style
  • Must be a team player
  • Ability to communicate effectively, both verbally and in writing
  • Ability to prioritize, manage multiple projects and meet deadlines
  • Effective oral and written communication skills; fits message to audience
  • Self-directed, highly motivated
  • Actively curious with learning agility
  • Growth mindset
  • Attention to detail
  • Great problem-solving skills
  • Well organized and resourceful
  • Strong professional drive
  • Excellent analytical and intellectual capabilities
  • Excellent relationship building, influencing and negotiating abilities
Additional Details:
  • Location: New York, NY; Sunrise, FL; or Phoenix, AZ
  • Workplace Flexibility: Potential to work remotely part of the time based on current projects and team needs.
  • Travel: Little to none
  • Visa Sponsorship: Employment eligibility to work with American Express in the U.S. is required as the company will not pursue visa sponsorship for this position.
 
American Express:
 
There’s a difference between having a job and making a difference.
 
American Express has been making a difference in people’s lives for over 160 years, backing them in moments big and small, granting access, tools, and resources to take on their biggest challenges and reap the greatest rewards.
 
We’ve also made a difference in the lives of our people, providing a culture of learning and collaboration, and helping them with what they need to succeed and thrive. We have their backs as they grow their skills, conquer new challenges, or even take time to spend with their family or community. And when they’re ready to take on a new career path, we’re right there with them, giving them the guidance and momentum into the best future they envision.
 
Because we believe that the best way to back our customers is to back our people.
 
The powerful backing of American Express.
Don’t make a difference without it.

Don’t live life without it.


ReqID: 18015412
Schedule (Full-Time/Part-Time): Full-time
Date Posted: Oct 9, 2018, 12:12:38 PM
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